Fuelled by the COVID-19 pandemic, the European Patent Office (EPO) launched a pilot project for oral proceedings by videoconference in May 2020. More than 2,300 proceedings have taken place in this manner since 1 January 2021, when the consent of all parties was no longer required for arranging a videoconference.
Kolster’s attorneys have taken part in several of these proceedings and have drawn a positive conclusion. In the first six months of the year, Simon Mügge, European Patent Attorney with a focus on biochemistry and life sciences, has participated in nine oral proceedings before the EPO by videoconference, mainly in opposition and appeal proceedings.
“Usually all parties attend by videoconference, but I have also participated in a hybrid proceeding where the Board of Appeal and the counterparty were physically present in Haar, Germany, whereas I joined from Vaasa in Finland. It was not to the detriment of the client’s outcome.”
Mügge has experienced technical problems only once, when the translation could not be switched off.
“One can select between different audio channels, and an English translation from German was available for the client. However, I prefer to listen in German in order to understand the small nuances in an argument. The technical problems were quickly resolved by the EPO.”
Mügge also notes that it is easy for other people to join proceedings as a member of the public.
“I had one case where someone wished to join the oral proceedings as a member of the public. The EPO provided a link for joining the videoconference by email without any problems,” Mügge explains.
“Oral proceedings by videoconference benefit small and medium-sized enterprises (SMEs) in particular, as they considerably reduce the costs associated with such proceedings. This renders the IPR system more accessible to applicants with limited resources.”
The European Patent Office has started a user survey on its pilot project for oral proceedings by videoconference before EPO opposition divisions. Participants in the pilot project can submit their comments via an online survey until 30 September 2021. The EPO will decide on the future of oral proceedings in opposition by videoconference once the pilot ends on 31 January 2022.
“I expect that the response will be positive and that the possibility of attending opposition proceedings by videoconference will be maintained in one way or another,” says Mügge.
The European patent with unitary effect, a further facilitation for SMEs, is slowly taking shape.
Currently, a European patent application is examined at the EPO, and once a patent is granted, it needs to be validated in each selected member state of the European Patent Convention (EPC). The European patent is thus transferred into a bundle of national patents, each only taking effect in its respective national jurisdiction.
Patentees, therefore, often need to enforce their IP rights in each and every national jurisdiction. Likewise, third parties who wish to act against a certain patent and who have failed to file an opposition during the opposition period of the EPC will have to file nullity suits against the relevant national patents under each national jurisdiction.
The preparation of translations for validation or conducting several proceedings in parallel can entail significant costs. In contrast, the European patent with unitary effect will not require additional translations upon being granted. In addition, infringement or revocation will be decided on in one proceeding, which decision then takes effect for all selected member states. Thereby, the costly need for several parallel proceedings is avoided.
“Ratification of the Unified Patent Court (UPC) was lastly delayed by the filing of two urgent motions with the German Constitutional Court. While the first urgent motion had been dealt with earlier, the German Constitutional Court has now also surprisingly fast-ruled on, and rejected, the second motion in July 2021,” Mügge explains.
“With its decision, the highest German court has paved the way for ratification of the UPC Agreement by the German president and the German government, which previously seemed to be one of the major delays. Still, the UPC further requires ratification by two additional states to take effect. In sum, the new court may probably start in early 2023, such that applications which are filed today may already benefit.”
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